WIPO Arbitration and Mediation Center
ADMINISTRATIVE PANEL DECISION
Deutsche Telekom AG v. Ginjupalli Krishna Kishore
Case No. D2003-0391
1. The Parties
The Complainant is Deutsche Telekom AG of Bonn, Germany, represented by Lovells of Germany.
The Respondent is Ginjupalli Krishna Kishore, of Andhra Pradesh, India.
2. The Domain Name and Registrar
The disputed domain name <tcareers.com> (the "Domain Name") is registered with Go Daddy Software (the "Registrar").
3. Procedural History
The Complaint was filed with the WIPO Arbitration and Mediation Center (the "Center") on May 22, 2003. On May 22, 2003, the Center transmitted by email to the Registrar a request for registrar verification in connection with the Domain Name at issue. On May 22, 2003, Go Daddy Software transmitted by email to the Center its verification response confirming that the Respondent is listed as the registrant and providing the contact details for the administrative, billing, and technical contact. The Center verified that the Complaint satisfied the formal requirements of the Uniform Domain Name Dispute Resolution Policy (the "Policy"), the Rules for Uniform Domain Name Dispute Resolution Policy (the "Rules"), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the "Supplemental Rules").
In accordance with the Rules, paragraphs 2(a) and 4(a), the Center formally notified the Respondent of the Complaint, and the proceedings commenced on May 27, 2003. In accordance with the Rules, paragraph 5(a), the due date for Response was June 24, 2003. The Response was filed with the Center on that date.
The Center appointed Daniel J. Gervais as the sole panelist in this matter on June 30, 2003. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.
4. Factual Background
The Complainant is Europeís largest telecommunications company and its operations cover the entire spectrum of telecommunication services. Besides its positioning in Europe, Deutsche Telekom also has a range of shareholdings in Central and Eastern Europe and the United States.
The Complainantís daughter company, known as T-Mobile International plans to be the largest GSM mobile communications provider in the world. The Complainant has established a presence in many major economic centers of the world, serving customers in more than 65 countries around the globe through regional units.
The Complainant has several trademarks containing of the letter "T," among others for goods and services in classes 9, 16, 36, 37, 38, 41 and 42. Moreover, the Complainant is the owner of more than 550 domain names worldwide containing "t(-)," including among others Ė the domain names: <t-careers.com/ .net/ .org/ .info/ .biz/ .de>, as well as <tcareers.net/ .org/ .info/ .biz/ .de>, <t-career.com/ .net/ .org/ .info/ .biz/ .de> and <tcareer.org/ .biz/ info /.de>. These domain names were registered mostly between April and October 2002, that is, some before, and some after the Respondentís registration of the Domain Name. German courts have come to the conclusion that the Complainant is owner of a trademark family based on the letter "T(-)" when used before a word.
In September 2002, the Complainant learned from an unsolicited offer to sell from the Respondent that on May 6, 2002, the Respondent had registered the Domain Name.
The Complainant initially accepted to purchase the Domain Name from the Respondent for an amount of 500 euros in order to avoid court or other proceedings. The Complainant then initiated a money transfer proceeding with "escrow.com" in order to secure the transfer of the Domain Name. The Respondent, however, increased his demands up to USD 1,000, even though the parties apparently had already agreed on the sum of 500 euros. The Complainant decided to pay the increased amount of USD 1,000 (together with fees, for a total of USD 1,045) to the Respondent. The Complainant wired the total amount of USD 1,045 to "escrow.com" on January 21, 2003. These transactions and discussions are evidenced by email exchanges between the Parties, copies of which have been provided to the Panel.
The Respondent then failed to transfer the Domain Name to the Complainant and instead asked for another USD 40 (ostensibly as reimbursement for additional wiring costs, although such costs were included in the USD 1045 paid by the Complainant). Nonetheless, the Complainant still tried to settle this matter and wired an additional USD 40 to "escrow.com" as requested by the Respondent.
The Respondent then cancelled the transfer proceeding and requested a "substantially better price" for the Domain Name, apparently after realizing that the Complainant has a strong interest in the Domain Name and other domain names containing "ecareers." According to an email dated April 1, 2003, the Respondent put the "substantially better price" in concrete terms, demanding USD 2,500 for the Domain Name.
5. Partiesí Contentions
In support of its Complaint, the Complainant asserts the following:
The trademarks upon which the Complaint is based are various national and international trademarks from the trademark series containing "T(-)." The Complainant has spent a considerable amount of time and money developing the brand "T-", and the public has come to associate the distinctive designation "T-" exclusively with the Complainant. As a result of the valuable reputation and goodwill which the Complainant owns in the brand "T-," this name now serves to identify the Complainant and businesses which are connected with, authorized or otherwise approved by the Complainant.
Given the fame and reputation of the Complainantís trademark series "T(-)," the Complainant believes that the Domain Name has been registered with this trademark series in mind. Moreover, the Respondent was aware of the Complainantís trademark and domain name series comprising Ė inter alia Ė "tcareers," when he registered the Domain Name.
Since the registration of the Domain Name, it has not been used.
The Domain Name is confusingly similar to the Complainantís trademark series "T(-)" and its Internet services T(-) CAREERS.DE/.COM /.NET /.ORG. The only difference being the fact that the "T" is not hyphenated. It is highly likely that Internet users who became aware of the Domain Name will estimate that it might be an Internet service of the Complainant. This is a typical case of "typo-piracy."
The Respondent does not have any legitimate interest in the use of the Domain Name. The Respondent is not and never has been a representative or licensee of the Complainant, nor is the Respondent otherwise authorized to use the Complainantís marks. The Respondent does not use the Domain Name for a bona fide offering of goods or services and is not making a legitimate noncommercial or fair use of it. The Domain Name resolves to an advertising page for the Registrar.
The Domain Name was registered and used in bad faith. There has been no use of the Domain Name by the Respondent. According to previous administrative panel decisions under the Policy, active use is not necessary. In fact, an indication of the bad faith of the Respondent is his lack of use of the Domain Name.
Furthermore, the Complaintís trademarks "T(-)" are considered as well-known marks in many markets and especially to the Respondent as shown in his emails of February 13 and 20, 2003. This is an indication of bad faith in the registration of the Domain Name.
According to paragraph 4(b)(i) of the Policy, the registration was in bad faith because the Respondent registered the Domain Name primarily for the purposes of selling, renting, or otherwise transferring it to the Complainant, who is owner of the trademark or to a competitor of the Complainant, for valuable consideration in excess of his documented out-of-pocket costs directly related to the Domain Name.
In his Response, the Respondent asserts the following:
The Domain Name is not similar to the supposed trademark of the Complainant. Firstly, there is no "t-" (with the hyphen) in the Domain Name. Secondly, if the Complainantís claim is to be accepted, then it is also to be accepted that any domain name starting with the letter "t" and a word or words attached to it, the number of which must be tens of thousands if not more, are similar to his trademark which is unreasonable.
The Respondent is not trying to use the brand name value of the Complainant, if any exists.
A single letter can be used to represent a lengthy word in naming an acronym-based domain name. For example, <nic.com> represents neighborhood Internet connection, the letters n, i and c representing the three words neighborhood, Internet and connection. Similarly, <msn.com> represents Microsoft Network. <ebay.com> represents an electronic bay. An acronym-based domain name removes the need for a visitor to a website to type in a long name.
The Complainant is supposed to have a trademark on a letter and a dash i.e. "t-" and claims a right on the Domain Name because it starts with the letter "t." In other words the Complainant is claiming a special right on the letter "t" itself. No one should be able to claim a right on something as basic as an alphabet of the language, especially in naming a domain name, no matter how much money and effort was spent in promoting it in a few countries.
The Domain Name is an acronym-based name. It was registered on May 6, 2002, by the Respondent. The Respondent also registered <ocareers.com> and <vcareers.com> on May 5, 2002, <ncareers.com> on May 9, 2002, <rcareers.com> on May 24, 2002, and few other such domains in January and February 2002. Therefore the Domain Name was one of a series of acronym-based domains and there was nothing special about it. The idea and the logic behind these names is <tcareers.com> can represent tamilnaducareers, <ocareer.com> can represent orissacareers, Tamilnadu and Orissa are states in India, <vcareers.com> can represent vijayawada careers, Vijayawada is the Respondentís hometown.
Therefore <tcareers.com> is neither a typo-piracy nor is similar to the trademark of the Complainant.
The Domain Name was not used, but neither are the Complainantís domain names in use. The Respondent has been searching for a financially sound partner to develop its websites, but has met with no success so far. It can be reasonably assured that these domains will be developed before the end of 2003.
The Respondent was not aware of the Complainant. The Complainant is a German company with maybe a strong presence in few other countries of Europe. But it can be reasonably presumed that no one from the state of AndhraPradesh, India where the Respondent lives, has heard of it. The Complainant is not a player, let alone a dominant player, in the telecommunications sector in AndhraPradesh, India. The Respondent is not in the telecommunications profession. Therefore to claim that the Respondent was aware of the Complainant at the time of registering the Domain Name is incorrect.
Regarding the sale of the Domain Name, the Respondent has not offered the Domain Name for sale to the Complainant. No communication took place with the Complainant from his personal mail addresses. It seems some misrepresentation went on in this respect.
6. Discussion and Findings
In accordance with Paragraph 4(a) of the Policy, in order to succeed in this proceeding and obtain the transfer of the Domain Name, the Complainant must prove that each of the three following elements are satisfied:
1. The domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights (see below, section A);
2. The Respondent has no rights or legitimate interests in respect of the domain name (see below, section B); and
3. The domain name has been registered and is being used in bad faith (see below, section C).
Paragraph 4(a) in fine of the Policy clearly states that the burden of proving that all these elements are present lies with the Complainant.
Pursuant to Paragraph 15(a) of the Rules, the Panel shall decide the Complaint on the basis of the statements and documents submitted and in accordance with the Policy, the Rules and any rules and principles of law that it deems applicable. Moreover, in accordance with Paragraph 14(b) of the Rules, if a party, in the absence of exceptional circumstances, does not comply with any provision of, or requirement under, the Rules or any request from the Panel, the Panel shall draw such inferences therefrom, as it considers appropriate.
A. Identical or Confusingly Similar
This question raises two issues: (1) does the Complainant have rights in a trademark or service mark; and (2) is the domain name identical or confusingly similar to such trademark or service mark.
The Complainantís argument on this first point is two-fold: First, the Complainant relies on German trademark registration DE 30216520 for the mark "T-CAREERS". It is also relying on approximately 1,000 trademark registrations that begin with the letter "T," (sometimes followed by a hyphen), thus creating a potential family of marks consisting of the letter "t" followed by a word identifying the type of service concerned.
The Panel recognizes that the Complainant has rights in the mark "t-career," that it registered and apparently used the domain name <t-career.com> prior to the Respondentís registration of the Domain Name. It is also clear that the Domain Name is confusingly similar with the Complainantís trademark, compounded by the strength of the family of "T(-)" marks belonging to the Complainant, as recognized by German courts. The presence of the hyphen is not significant in terms of avoiding confusion. See on this point the reasoning in BIC Deutschland GmbH & Co KG v. Paul Tweed, WIPO Case No. D2000-0418 ("TIPP-EX" trademark vs. the domain name <tippex.com>)
The Panel thus finds for the Complainant on this first point.
B. Rights or Legitimate Interests
According to paragraph 4(c) of the Policy, a Respondent may establish its rights or legitimate interests in the domain name, among other circumstances, by showing any of the following elements:
"(i) before any notice to you [Respondent] of the dispute, your use of, or demonstrable preparations to use, the domain name or a name corresponding to the domain name in connection with a bona fide offering of goods or services; or
"(ii) you [Respondent] (as an individual, business, or other organization) have been commonly known by the domain name, even if you have acquired no trademark or service mark rights; or
"(iii) you [Respondent] are making a legitimate noncommercial or fair use of the domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue."
There is no evidence of any of the above. The Complainant positively asserts the opposite and the Respondent admits to the absence of use.
The Panel thus finds for the Complainant on this second point.
C. Registered and Used in Bad Faith
Paragraph 4(b) of the Policy sets out four circumstances which, without limitation, shall be evidence of the registration and use of a domain name in bad faith, namely:
(i) Circumstances indicating that the Respondent has registered or acquired the domain name primarily for the purpose of selling, renting, or otherwise transferring the domain name registration to the complainant who is the owner of the trademark or service mark or to a competitor of that complainant, for valuable consideration in excess of the Respondentís documented out-of-pocket costs directly related to the domain name; or
(ii) The Respondent has registered the domain name in order to prevent the owner of the trademark or service mark from reflecting the mark in a corresponding domain name, provided that Respondent has engaged in a pattern of such conduct; or
(iii) The Respondent has registered the domain name primarily for the purpose of disrupting the business of a competitor; or
(iv) By using the domain name, the Respondent has intentionally attempted to attract, for commercial gain, Internet users to the Respondentís website or other on-line location, by creating a likelihood of confusion with the complainantís mark as to the source, sponsorship, affiliation, or endorsement of the Respondentís website or location or of a product on the Respondentís website or location.
The analysis of whether bad faith is present highlights the difference between the first part (identity or confusing similarity with a mark in which the Complainant has rights) and the third part (bad faith registration and use) of the Policyís test. Under the first leg, the Panel must determine the validity and confusion from the perspective of the origin of the mark; on the third one, absent evidence under paragraph 4(b) leading to a conclusion of bad faith registration and use, the Panel must look at whether from the Respondentís perspective, the mark was known at the time of registration of the Domain Name, the likelihood of the Respondentís knowledge of that mark, and his/her bad faith use or non-use in light of the circumstances of the case.
There is some evidence provided by the Complainant to support the claim that the Respondent knew the Complainantís mark(s) at the time of registration. But the Respondent provided an alternative explanation ("the Domain Name was one of a series of acronym based domains and there was nothing special about it. The idea and the logic behind these names is <tcareers.com> can represent tamilnaducareers, <ocareer.com> can represent orissacareers, tamilnadu and orissa are states in India, <vcareers.com> can represent vijayawada careers, vijayawada is the Respondentís hometown.") While the Respondentís concurrent registration of <ncareers.com>, <ocareers.com> etc. tends to supports his statements, the Panel notes that he did not use the Domain Name and, approximately four months after registering it, sent an unsolicited offer to sell the Domain Name to the Complainant. In parallel, the Complainant positively asserts that the Respondent had knowledge of its mark(s).
That being said, while the initial offer by the Complainant (of 500 euros, made on August 21, 2002) was substantially above normal out-of-pocket costs, the Respondent did not at that time solicit a specific amount. It is reasonable to infer, however, from the circumstances and particularly later negotiations, including the Respondentís repeated attempt to get more money from the Complainant each time an amount had seemingly been agreed upon (and wired to an escrow account), that the Respondent intended to get significantly more than his out-of-pocket expenses. His email of February 20, 2003, is indicative of his state-of-mind in that regard: "it seems you are very keen on occupying the Internet space related to tcareers.com. [Ö] Öyour double quick reply to my previous email, as opposed to your extreme reluctance to even acknowledge my genuine/reasonable demand of increasing the sales price by $40, had confirmed again that you are very keen on acquiring [the Domain Name]. Under these circumstances, I feel $1000 is a price on the lower side for the domain. I would like you to reconsider your offer and come up with a substantially better priceÖ"
The Respondentís explanation as to why he registered the Domain Name without knowledge of the Complainantís mark(s) appears rational, but unfortunately, the Respondent has little if any credibility in this case, and the Panel can see no reason to doubt the Complainantís factual statements. In other words, the Panel simply does not believe the Respondentís explanation. First, because the Respondentís "half-denial" that he sent those emails (The Response states: "No communication took place with the Complainant from his personal mail addresses. It seems some misrepresentation went on in this respect.") is not credible. The email address from which these emails were sent corresponds to the address to be used for the escrow transfer of funds. It also corresponds to the domain name of the Respondentís "hometown."
Second, the Respondentís dealings with the Complainant are also relevant in terms of assessing his credibility. In that regard, the Panel notes that at least one contract to transfer the Domain Name seems to have been validly formed. The Respondent then changed his mind (and the price). Indeed, the Respondent signaled his acceptance of the Complainantís initial offer of 500 euros (the Respondentís email of September 6, 2002, contains the following: "I will sell the domain name for the price mentioned by you.") Then another contract (which could be considered an amended one) seems to have been formed for USD 1,045. These contract(s) remained non-executed by the Respondent and, while the Panel does find fault with the Respondent in that regard, it is not the Panelís role to enforce that contract; not does the Panel have that authority under the Policy. It is, however, a sign of the Respondentís state of mind.
To put it bluntly, in a proceeding of this sort, where the Panel must assess the veracity and strength of assertions and documentary evidence without the benefit of hearing the witnesses and without cross-examination, being economical with the truth in submissions to the Panel is a fatal mistake. While the Respondentís explanation as to why he picked the Domain Name is plausible, it is not the only logical one. The Complainant has provided another version, alleging prior knowledge of the Complainantís mark(s). Yet another is that the Domain Name and other <[letter]careers.com> domain names were registered in hopes of selling some of them based on the appeal of the "careers" portion and online job search sites.
In view of the Respondentís seriously deficient credibility, the Panel prefers the Complainantís version and accepts that the Respondent registered the Domain Name with prior knowledge of the Complainantís mark(s) and primarily for the purpose of selling it to the Complainant. This constitutes bad faith registration and use under paragraph 4(b)(i) of the Policy.
For all the foregoing reasons, in accordance with Paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the Domain Name, <tcareers.com> be transferred to the Complainant.
Daniel J. Gervais
Date: July 14, 2003